August 16, 1999
To the ICANN Interim Board, Ms. Dyson and Mr. Roberts:
The Association for Computing Machinery's Internet Governance
Committee (ACM-IGC) is very concerned about the cybersquatting
proposals you are reviewing for adoption at the Santiago meeting.
For the reasons below, we ask you to return the full cybersquatting
matter, WIPO Final Report Chapter 3, to the DNSO Names Council for
further evaluation.
I. Returning the Cybersquatting/Arbitration Procedure to the
DNSO Will Produce a Fairer Definition of Cybersquatting with More
Participation and Buy-In.
A) A Fairer Definition of Cybersquatting Can Be Drafted.
Not to detract from the fine work of WIPO, but WIPO's definition of
cybersquatting did not emerge until the WIPO Final Report. It did
not receive notice at the worldwide hearings and further, Working
Group A did not question or open the definition to focused review.
Since the publication of the WIPO Final report the US Senate has
been working on the cybersquatting issue. The Senate's experts
started with the WIPO definition and refined it considerably:
to tighten it up, make it more balanced and reduce the chances
of unintended consequences on domain name holders. In late July,
the Senate produced a revised definition of cybersquatting which:
- expands upon WIPO's three criteria for "evidence" of cybersquatting
and creates eight "factors" that courts may consider when trying to
determine bad-faith intent (avoiding, among other pitfalls, the
danger of the current WIPO definition to punish a good faith offer
to resolve a domain name/trademark dispute because the domain name
holder does not have the time or resources to fight a large company);
- protects trademark owners, but also protects a "person's legitimate
noncommercial or fair use" of a domain name that happens to be identical
to, confusingly similar to or dilutive of a trademark; and
- provides a balanced set of penalties -- punishing both bad faith
registration of domain names (cybersquatting), and bad faith use of
a trademark against a domain name holder (reverse domain name
hijacking/trademark misuse).
See US Senate bill number 1255, revised version, available at
http://www.senate.gov.
The Senate actions are not just reflections of US law. Rather, the
Senate bill introduces fairness and fair use consistent with
traditional international principles of trademark limits, exceptions
and defenses. The result is an improved balance which provides much
more protection for the non-commercial domain name holders, as well
as for individuals and small businesses. This revised definition of
cybersquatting should be considered carefully before ICANN adopts any
rules.
B) A More Balanced Procedure for Resolving Disputes Can Be Drafted.
It is clear from the Final Report of Working Group A that there are
many procedural questions have been raised. Among other gaps, ACM-IGC
notes that current WIPO procedures do not offer protections for victims
of repeated reverse domain name hijacking (trademark misuse). Further,
the Names Council has referred questions back to WIPO which would
likely be resolved by the DNSO given a little more time and the input
of the NCDNHC.
ACM-IGC believes that the current procedures protect the rights of
challengers much more than the rights of domain name holders. We think
that significant balance and input can be offered by the Non-Commercial
Constituency Names Council representatives and members in the
discussion.
Further, ACM-IGC is concerned about Final Report statement that we
have meaningful precedents in "multi-national, multi-lingual dispute
resolution mechanism." While this may be true in the commercial
settings (e.g., software licensing disputes between large commercial
entities), it is not true in the domain name arena. Never before have
international arbitrators been asked to balance the equities of fair
use versus trademark rights in unchartered areas of law. If they do
so, the procedural rules should be designed by both the noncommercial
and commercial communities.
Therefore, ACM-IGC asks you to return the cybersquatting procedural
questions, in their entirety, to the DNSO for further work. The Final
Report of WG-A can serve as a roadmap for discussion. Such a move will
allow the NCDNHC and others to participate and to add the balance of
their unique perspectives and concerns.
C) A More Inclusive DNSO Process, Consistent with the Aims of the
ICANN Bylaws, Can be Followed.
As the report of WG-A acknowledged, the review of this cybersquatting
proposal was expedited and key voices were missing. In significantly,
there was no elected voice of the Non-Commercial Domain Name Holders
Constituency (NCDNHC). This is the constituency designated to
represent the entire non-commercial community. Without the NCDNHC,
the DNSO did not have the elected voice of non-commercial domain name
holders: those most likely to be challenged under the new
cybersquatting rules, those most likely to lose their domain names,
and thus most likely to lose the communication of the website under
that domain.
ACM-IGC has been a leader in organizing the NCDNHC and our
representatives will be elected in time for the Santiago meeting.
The legitimacy of the DNSO lies in its balance of different voices
in the constituency process, and thus, the participation of elected
NCDNHC representatives is needed.
II. Addressing the Voices for Haste
We know there are strong arguments in favor of adopting a domain name
dispute policy quickly. ACM-IGC would like to offer some assurance to
ICANN that allowing a little more time for DNSO work will not cause
irrevocable harm to the Internet.
A strong reason for the original cybersquatting proposals was to
prevent the large scale reservation of multiple brand names at the
moment of creation of a new gTLD. This concern still exists. Since
new gTLDs are still being debated in working group c, there is still
time for adoption of a well-developed cybersquatting policy.
III. Interim Actions
We know ICANN is concerned about the liability of the registrars and
registries and ACM-IGC shares this concern. We are pleased that judges
in the US, UK, and other countries are not holding registrars/registries
liable based on mere registration of a domain name (such as Lockheed
Martin vs. NSI, a US federal court decision).
ACM-IGC would support a resolution by ICANN in Santiago that affirm
this case law as Internet consensus and states that registrars and
registries should not be liable for registering a domain name -- even
if that domain name is found in a court or alternative dispute
resolution proceeding to infringe or dilute a trademark.
Such a resolution by your Board would provide valuable guidance to
judges around the world who will look at cybersquatting cases for the
first time. It will help them to decide against trademark owners who
seek to make registrars and registries responsible parties.
IV. Conclusion: A Well-Balanced, Widely Supported Cybersquatting
Policy Will Provide Support and Legitimacy to ICANN and the DNSO
In light of the fairer and more balanced definition of cybersquatting
offered by the US Senate, the many procedural problems pointed out in
the WIPO proposals, the hard work of the Non-Commercial Domain Name
Holders Constituency to self-organize and its desire to have elected
representatives participate in this important cybersquatting proceeding,
ACM-IGC asks ICANN to return the cybersquatting definition and
alternative dispute resolution procedures to the DNSO Names Council for
additional work on substance and procedure. A well-developed
cybersquatting proposal, with full NCDNHC support, will strengthen the
DNSO, ICANN and the Internet as a whole.
Very sincerely yours,
ASSOCIATION FOR COMPUTING MACHINERY'S INTERNET
GOVERNANCE COMMITTEE
Dr. Barbara Simons
President, Association for Computing Machinery
Randy Bush, Chair, ACM's Internet Governance Committee (ACM-IGC)
Vice President of Network Architecture, VERIO
ACM-IGC Committee Members:
Carlos A. Afonso
Harald Tveit Alvestrand, Senior Consultant, Maxware, Norway
Scott Bradner, Senior Technical Consultant, Harvard University
G.Gervaise Davis III, Partner, Davis & Schroeder
Dave Farber, Professor of Computer Science and Electrical Engineering,
Univ. of Pennsylvania
Joanne Hugi, Director of Computing Center, University of Oregon
Kanchana Kanchanasut, Associate Professor, Asian Institute of
Technology
Kathryn A. Kleiman, Attorney, Internet Matters
Lawrence Lessig, Professor, Harvard Law School
Andy Linton, Technical Manager, Netlink, New Zealand
Milton Mueller, Associate Professor, School of Information Studies,
Syracuse University
Dr. Nii N. Quaynor, CEO, Network Computer Systems, Ghana
Marc Rotenberg, Executive Director, Electronic Privacy Information
Center (EPIC)